Appeal No. 97-0943 Page 9
Application No. 08/232,502
37 CFR § 1.196(b)
Inasmuch as the basic thrust of our affirmance of the
35 U.S.C. § 112, second paragraph rejection differs from the
rationale advanced by the examiner for the rejection, we
hereby designate the affirmance to be a new ground of
rejection pursuant to 37 CFR § 1.196(b) to allow the appellant
a fair opportunity to react thereto (see In re Kronig, 539
F.2d 1300, 1302-03, 190 USPQ 425, 426-27 (CCPA 1976)).
The obviousness issue
Considering now the rejection of claims 1, 2, 5 through
7, 9, 10 and 33 through 35 under 35 U.S.C. § 103, we have
carefully considered the subject matter defined by these
claims. However, for reasons stated supra, no reasonably
definite meaning can be ascribed to certain language appearing
in the claims. As the court in In re Wilson, 424 F.2d 1382,
165 USPQ 494 (CCPA 1970) stated:
All words in a claim must be considered in judging the
patentability of that claim against the prior art. If no
reasonably definite meaning can be ascribed to certain
terms in the claim, the subject matter does not become
obvious --the claim becomes indefinite.
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